Professor Sarnoff weighs in on Supreme Court's DNA patent ruling

Professor Joshua Sarnoff, director of DePaul's Center for Intellectual Property Law, called yesterday's Supreme Court ruling against isolated DNA patenting "momentous."

"The decision will free researchers, clinicians, and the public to perform research and diagnosis without restriction to use of patent holders' laboratories," explained Sarnoff.

The case concerned patents held by Utah-based Myriad Genetics company, which identify genes that correlate with an increased risk of hereditary breast and ovarian cancer. The patent claimed to own isolated DNA molecules that have not been modified from natural genetic sequences by removing the non-coding DNA regions.

Sarnoff says the decision is also significant as the court categorically reaffirmed that products of nature “are not the kind of thing that Congress intended to be subject to private ownership through patent rights, and that mere isolation from nature is not sufficient to change the nature of those products into human 'inventions.'

"The ruling will also allow competition in diagnosis and promote additional research thorough the creation of a public database of information on mutations, which currently Myriad possesses as a trade-secret, access-restricted database that it was able to create from its ability to direct all genetic testing to its own laboratories."

After the ruling, three companies and two university labs said that they would begin offering genetic testing in the field of breast cancer, the New York Times reported.

Sarnoff takes issue with the court's additional ruling to authorize patenting of synthetically-created DNA, known as cDNA. He also expressed concern that the court may not have provided a sufficiently clear line to distinguish natural products from human inventions.

“However,” he states, “[the court] clearly rejected the asserted ‘reliance’ interests of the plaintiffs and others in investments made to seek these patents, given that the Patent Office has issued patents on isolated DNA sequences for many years. As the court stated, those concerns are for Congress, where we can now expect biotechnology and pharmaceutical and chemical patent owners to turn next.”

Professor Sarnoff joined with other intellectual property law and constitutional law professors to file an amicus brief in the case. He is currently the featured expert on DePaul's Newsroom.